What is a Trademark and Why Are Trademark Clearance Searches Necessary?
A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. Your trademark is the “source indicator” or the “anchor” to your overall brand and products. To be the only entity allowed to use a trademark, one must register it with the United States Patent and Trademark Office (“USPTO”) ~ if the USPTO allows it!
So you think you’ve found that perfect name that you absolutely love?!
Get excited, but not too excited.
The USPTO will reject your trademark application if the Examining Attorney finds that there is a likelihood of confusion with a prior-filed trademark. A rejection can be unbelievably frustrating, especially after spending so much time creating your brand name.
If your name is rejected, it’s may be in your best interest to create another brand name. At the end of the day, you want your trademark to be unique, strong, protectable and enforceable.
On the sunny side, you can actually take some very important steps to drastically decrease your chances of receiving a rejection from the USPTO. Being proactive will save you time and money.
Here’s the solution for all potential trademark applicants: Clearance searches!
Always perform a trademark clearance search before attempting to register any potential trademark.
A trademark clearance search can be performed at a basic level via the USPTO’s Trademark Electronic Service System (TESS). However, this type of simple search is not fool-proof. It’s almost impossible to search all variations and incarnations of a word mark.
You might also want to consider a more robust trademark search, one that is outsourced to a third-party search company and then reviewed and analyzed by a trademark attorney.
How to Perform a Basic Trademark Search On your Own
It is quite simple to do a basic search by using the TESS. Here, you can search the USPTO database of registered trademarks and pending applications.
TESS offers several options for entering search terms. One can choose from three options:
Basic Word Mark Search;
Word and/or Design Mark Search (Structured); or
Word and/or Design Mark Search (Free Form).
However, a basic search is merely a cursory method of searching.
Even a basic search will benefit from a thorough analysis by an attorney.
Moreover, a Comprehensive Trademark Clearance Search is strongly encouraged in most situations to avoid future trademark infringement complaints, which could result in penalties that include money damages.
USPTO offers the following stern warning about relying on one’s own basic search:
WARNING: AFTER SEARCHING THE USPTO DATABASE, EVEN IF YOU THINK THE RESULTS ARE “O.K.,” DO NOT ASSUME THAT YOUR MARK CAN BE REGISTERED AT THE USPTO. AFTER YOU FILE AN APPLICATION, THE USPTO MUST DO ITS OWN SEARCH ALONG WITH OTHER REVIEWS, AND MAY REFUSE TO REGISTER YOUR MARK.
According to the USPTO webpage, “Trademark Basics,” hiring a competent trademark attorney is not only recommended, but an integral part of this legal process. (As an aside, foreign domiciled entities must hire a US-licensed attorney starting August 3, 2019, for handling trademark applications, maintenance, and work before the TTAB.)
USPTO states the following:
● You may file a trademark application on your own (unless you are foreign domiciled as linked above), but if you want someone to help you or give you legal advice, you need to hire an experienced trademark attorney who is licensed to practice law in the United States.
● Foreign attorneys and non-attorneys who work for trademark filing companies are not permitted to advise you, help you fill out a form, sign documents for you, or take actions on your application for you.
● Hiring someone who is not allowed by the USPTO’s rules to represent you can delay your application and jeopardize its validity.
Having a trademark roadmap that starts with visualizing your goals for your business and leads to “planting your flag” via the establishment of a trademark can be a daunting process.
It is vital to heed the USPTO’s warnings, to insulate oneself from infringement damages.
And remember, you don’t just want to create a trademark that can be cleared and registered.
You want a unique trademark that is memorable and strong from both the legal and marketing perspective!
The right attorney will not only help you with clearance searching, but might even guide you in a direction that helps you manifest that perfect brand name to fit the vision for your brand just perfectly!!!
Need help with trademark creation or clearance?